WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.
Case No. D2000-0071
1. The Parties
The Complainant is CSA International, a corporation organized under the laws of Canada having its principal place of business at 178 Rexdale Blvd, Toronto, Ontario, Canada. The Respondents are John O. Shannon and Care Tech Industries, Inc, of Seminole, Florida, United States of America. John O. Shannon is the President of Care Tech Industries, Inc.
2. The Domain Name(s) and Registrar
The domain names with which this dispute is concerned are:
"csa-canada.com" and "csa-international.net"
The Registrar with which the domain names are registered is:
Network Solutions Inc, of Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Centre (the "WIPO Centre") on 18 and 16 February 2000 respectively.
3.2 On 23 February 2000 all formal requirements for the establishment of the complaint were checked by the WIPO Centre and found to be in compliance with the applicable ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and WIPO Supplemental Rules - The Panel accepts the WIPO Centre checklist as evidence of proper compliance with the Rules and establishment of the complaint.
3.3 The Administrative Proceeding commenced on 23 February 2000.
3.4 On 24 February Complainant filed a Clarification to the Complaint.
3.5 On 26 February the Respondents filed their Response.
3.6 On 29 February the Respondents filed a Revised Response.
The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint as clarified by the Clarification and the Revised Response.
4. Factual Background
4.1 Complainant is a Canadian not for profit organization established in Canada in 1919 and asserts that it has long used the mark "Canadian Standards Association" and/or "CSA" and further asserts use of the mark "CSA International".
4.2 Complainant is the registered owner of the following United States and Canadian trade mark and certification trade mark registrations :
No. TMA 318180 "CSA and design" filed 26 February 1985, registered 5 September 1986.
No. TMA 379061 "CSA and design" filed 27 November 1990, registered 27 November 1991.
No. UCA 038989 "CSA" filed 28 December 1950, registered 28 December 1950 (first use in Canada, 26 April 1944).
No. 1758260 "CSA and design" filed 28 May 1991, registered 16 March 1993.
No. 1485748 "CSA and design" filed 11 October 1986, registered 19 April 1988.
No. 0971065 "CSA" filed 17 July 1972, registered 16 October 1973.
No. 0967896 "CSA logo" filed 17 July 1972, registered 4 September 1973.
4.3 Complainant is the applicant for registration in United States and Canada of the following certification trade marks :
No. 75-381569 "CSA International" filed 29 October 1997, published 23 March 1999.
No. 1002171 "CSA International" filed 18 January 1999, advertised 24 November 1999.
4.4 Complainant is the registrant of domain names:
"csa-international.org"; "csa.ca"; "csa-usa.org"; "csa-intl.org" and
4.5 Complainant carries on business in the development of standards, the certification and testing of products and equipment, the registration of management systems and the sale of publications in printed and electronic form. Complainant works in cooperation with similar organizations throughout the world and is known by reference to its name Canada Standards Association, and trade marks "CSA " and "CSA International". Complainant promotes its business through its Website at "csa-international.org".
4.6 Respondent Care Tech Industries Inc, is a Florida, United States of America corporation and carries on business as a manufacturer and marketer of equipment including ozone generators. It markets such equipment under the name and trade mark ODATUS and maintains a Website at "odatus.com" through which it promotes its products.
4.7 Respondent John O. Shannon is the President and Chief Executive Officer of Care Tech Industries Inc, and appears to be in day to day control of the operations of that company. He is also the administrative contact for each of the domain names in suit.
4.8 In March 1998 Respondents submitted an ozone generator to Complainant for certification. Complainant has not certified the Respondentís generator and this has been the subject of ongoing dispute between the Complainant and the Respondents. The substance and merits of this dispute are not relevant to this case.
4.9 In or before March 1999, the Respondents respectively registered domain names "csa-canada.com" and "csa-international.net".
4.10 Respondents maintain websites at each of these addresses. At each website, Respondents attack and criticise the Complainant and its staff in relation, inter alia, to its failure to certify Respondentsí Odatus generator. The content of each site is substantially identical, and each directs viewers to see "our homepage". Following that link leads to the "odatus.com" homepage which includes promotion of the Odatus ozone generator.
5. Common Complaint
5.1 Complainant submits that the Respondents may be joined in a common complaint. Rule 3(c) of the Rules provides that the complaint may relate to more than one domain name provided the domain names are registered by the same domain name holder.
5.2 Having regard to the facts set out in paragraphs 4.7 and 4.9 and the underlying objective of the Policy to provide a speedy and efficient dispute resolution process and having regard also to the fact that the Respondents have treated the matter as a common Complaint and have filed a common Response, the Panel considers it appropriate to look beyond the corporate veil of the Respondent Care Tech Industries, Inc, and determine the matter on the basis that the domain names are registered by the same domain name holder.
6. Applicable Dispute
6.1 To succeed in its complaint, Complainant must show that each of the conditions of paragraph 4(a) of the policy are satisfied, namely that:
(i) the domain names are identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the domain names;
(iii) the domain names have been registered and used in bad faith.
6.2 Complainant asserts that each of the domain names is identical with or confusingly similar to one or more of the trade marks set out in paragraphs 4.2 and 4.3.
6.3 Respondents do not directly contest Complainantís assertion but contend in effect that Complainantís company name comprises generic components which "cannot be registered in part, whole or together". Assuming in the Respondentsí favour that this contention applies to Complainantís trade marks, that contention cannot be accepted in the light of the actual registration in both USA and Canada of the "CSA" mark and the publication for opposition in both countries of the "CSA International" mark. The Panel further notes that the reference in the Rules and in the policy to trade marks is not confined to marks which are registered. So far as the "CSA and design" marks are concerned the dominant particulars of those marks, and the name by which they would be identified is "CSA". The addition of the word "Canada" to the "CSA" mark adds to, rather than reduces, the likelihood of confusion in view of Complainantís Canadian domicile.
6.4 The Panel therefore concludes that:
(i) the domain name "csa-canada.com" is substantially identical to and confusingly similar to Complainantís "CSA" trade mark;
(ii) the domain name "csa-canada.com" is confusingly similar to Complainantís "CSA and design" trade marks.
(iii) the domain name "csa-international.net" is substantially identical to and confusingly similar to Complainantís "CSA-International" trade mark.
(iv) the domain name "csa-international.net" is confusingly similar to Complainantís "CSA" and "CSA and design" trade marks.
Respondents claim to Rights or Legitimate Interests
6.5 Complainant asserts that Respondents have no right or legitimate interests in the domain names.
6.6 Complainant further asserts with reference to paragraph 4(c) of the Policy that Respondents:
(i) do not use the domain names in connection with the bona fide offering of goods or services;
(ii) are not commonly known by the domain names;
(iii) are not making legitimate non-commercial or fair use of the domain names;
(iv) are intending to divert persons looking for Complainantís website and to tarnish its trade marks.
6.7 Respondents respond that:
(i) they have a right of freedom of speech and to direct questions to a specific audience;
(ii) they have a legitimate interest in "this audience primarily to post information about a specific subject that concerns both the consumer and the manufacturers";
(iii) they are offering legitimate non-commercial information;
(iv) they are offering nothing for sale, are not utilizing trade marks on their page and are not competitive (with the Complainant) in products or services.
6.8 Respondentsí response confirms that they are not using the domain names in connection with a bona fide offering of goods or services and they do not claim to be commonly known by either of the domain names. Examination of Respondentsí web pages clearly show that they are using their domain names to attract persons to their sites for the purpose of publicly attacking the Complainant and members of its staff and pleading its case in relation to a dispute between themselves and the Complainant in relation to a product which Respondents offer under the trade mark Odatus. Persons attracted to the site are likely to be persons seeking contact with Complainant, not persons seeking contact with Respondents.
6.9 Respondents claim to rights and legitimate interests is essentially based on a claim to freedom of speech and, expression of opinion, but that right does not require the use of Complainant's trade marks in the domain names for that purpose.
A domain name is not merely an address, it is also a means of identification. As noted in the final report of WIPO:
"Domain names were intended to perform a technical function in a manner that was convenient to human users of the Internet. They were intended to provide addresses for computers that were easy to remember and to identify without the need to resort to the underlying IP numeric address. Precisely because they are easy to remember and to identify, however, domain names have come to acquire a supplementary existence as business or personal identifiers."
The adoption by the Respondents of an Internet address substantially identical or confusingly similar to that of the name, Internet address and trade marks of the Complainant must inevitably and misleadingly divert consumers to that address and have the effect of tarnishing the trade marks. Respondentsí claim that there are no registered trade marks utilized on their sites is plainly erroneous since the sites use the mark C SA in the heading and throughout the text of the web page.
The ability to claim Standards Association certification is a useful commercial tool. The Respondent is in an on-going dispute with the Complainant over the certification of its products. Objectively viewed, the Respondentsí activities are directed to a commercial end. Further the sites direct users to "see our home page", i.e., to the Respondentsí homepage where the Respondentsí goods are promoted. The pages themselves extol the virtues of Respondentsí product, e.g., "To our knowledge the Odatus generator plates produce the purest ozone".
6.10 The Panel therefore concludes that Respondents have failed to rebut Complainantís assertion that Respondents have no rights or legitimate interests in respect of the domain names.
Respondents Registration and use in Bad Faith
6.11 Complainant asserts that Respondents have registered and used the domain names in bad faith.
6.12 Respondents reply that:
(i) they are not a competitor of the Complainant;
(ii) they are not attempting to attract for commercial gain;
(iii) they are not acting out of malice or attempt to well pages or to harm or harass Complainant but merely to inform the public;
(iv) they are asking the world their opinion on their findings.
6.13 Paragraph 4(b) of the Policy sets out without limitation four circumstances which, if found, shall be evidence of registration and use of a domain name in bad faith. The Panel finds no evidence that Respondents registered the domain names for the purpose of selling them. Nor does it appear that the domain names were registered to prevent the Complainant from reflecting its trade marks in a corresponding domain name (though that may be an effect of their registrations in the ".com" and ".net" domains), and there is no evidence of a pattern of such conduct by the Respondents. Respondentsí conduct does not therefore appear to fall within sub-paragraphs (i) or (ii) of paragraph 4(b).
Likewise the Panel does not consider the conduct to fall within sub-paragraph (iii) but only for the reason that the parties are not competitors in the business sense.
6.14 For the reasons set out in paragraph 6.4 and 6.9 above, the Panel is of the opinion that the conduct of the Respondents falls within paragraph 4(b)(iv) of the Policy. The evidence clearly demonstrates that the Respondents have intentionally attempted to attract Internet users to their websites by creating a likelihood of confusion with Complainantís marks as to the source or affiliation of their websites. As discussed in paragraph 6.9, there is a commercial gain to be had from Complainantís certification and the registration and use of the websites has clearly been adopted as part of Respondents pursuit of its dispute with respect to an application for certification of its product. The Panel therefore concludes that Respondentsí conduct was for commercial gain.
6.15 Even if the Respondentsí conduct does not fall under any of the specific heads of paragraph 4(b), it is to be remembered that those specific provisions are expressed to be without limitation. In the case of Cardservice International, Inc. v. McGee decided in the U.S. District Court for the Eastern Districit of Virginia, the Defendant registered a domain name incorporating the Plaintiffís trade mark and used the associated website to attack and "bad mouth" the Plaintiff. In that case the Court said:
"Such malicious actions and statements are not made in the "reasonable continuation of litigation" and indicate an intention by McGee to use Cardservice Internationalís registered mark to harm the companyís reputation and ability to do business on the Internet. The Court finds that Cardservice International has fulfilled its burden of demonstrating bad faith on the part of McGee and that an award of attorneys fees is warranted."
The evidence here indicates that the domain names which have been registered and are being used by the Respondents, are plainly taken from the Complainant, are being used to attack the Complainant and to promote the commercial and other interests of the Respondents without a legitimate non-commercial or fair use excuse. In the opinion of the Panel, that in itself amounts to registration and use in bad faith.
7.1 Respondents have requested that, if possible, its Response be considered confidential. It has been necessary for the Panel to incorporate parts of Respondentsí Response into the above reasons. Paragraph 4(j) of the Policy provides that all decisions under the Policy will be published over the Internet, except where an Administrative Panel determines in exceptional circumstances to redact portions of its decision.
7.2 The Panel does not consider that exceptional circumstances justifying such redaction are present in this case. The Panelís decision should therefore be published in full.
8.1 The Panel therefore concludes and decides that:
(i) Domain names of the Respondents are identical or confusingly similar to trade marks in which Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the domain names;
(iii) the domain names have been registered and are being used in bad faith;
(iv) the domain names in suit should be transferred to the Complainant.
R.A. Fashler P.L. Sbarbaro
Dated: March 24, 2000